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508
Case 1:05-cv-12237-WGY Document 508 Filed 06/14/2007 Page 1 of 5
)
AMGEN INC., )
)
Plaintiff, )
)
vs. )
) CIVIL ACTION No.: 05-CV-12237WGY
F. HOFFMANN-LA ROCHE LTD; )
ROCHE DIAGNOSTICS GmbH; and )
HOFFMANN-LA ROCHE INC. )
)
Defendants. )
)
material facts, pursuant to Local Rule 56.1, in support of their motion for partial summary
judgment that the asserted claims of U.S. Patent Nos. 5,547,933 (the ‘933 patent) and 5,621,080
(the ‘080 patent) are invalid, under 35 U.S.C. § 112, for indefiniteness and lack of written
description.
1. In this action, Plaintiff Amgen Inc. (“Amgen”) alleges that Roche infringes claims
3, 7-9, 11-12 and 14 of the ‘933 patent. (Suh Decl., Ex. K at p. 3).
2. In Amgen Inc. v. Hoechst Marion Roussel, Inc., 126 F.Supp. 2d 69, 91 (D. Mass.
2001) (“Amgen I”), this Court construed the term “non-naturally occurring,” as used in the
claims of the ‘933 patent, to mean “not occurring in nature.” The Court stated that “[b]y
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Case 1:05-cv-12237-WGY Document 508 Filed 06/14/2007 Page 2 of 5
including this limitation,” the applicant “meant to stand clear of the unpatentable, naturally
3. The ‘933 patent describes only one supposed physical distinction between the
4. In Amgen I, this Court held that because the glycosylation of naturally occurring
EPO varies, claims 1, 2 and 9 of the ‘933 patent, which distinguish the claimed non-naturally
were invalid for indefiniteness (“one of ordinary skill would be unable to determine whether
a particular erythropoietin has a glycosylation which differs from that of human urinary
erythropoietin”) and lack of written description (“the patent fails to convey to one of ordinary
skill in the art as of 1984 that Dr. Lin invested in erythropoietin product having glycosylation
5. In Amgen Inc. v. Hoescht Marion Roussel, Inc., Civil Action No. 97-10814-WGY
(D. Mass), Amgen fully litigated whether the glycosylation of human urinary erythropoietin
varies such that one of ordinary skill in the art as of 1984 reading the ‘933 patent would have
understood that Dr. Lin invented an erythropoietin product having glycosylation which
6. In Amgen Inc. v. Hoechst Marion Roussel, Inc., Civil Action No. 97-10814-WGY
(D. Mass.), Amgen fully litigated whether one of ordinary skill in the art reading the claims
of the ‘933 patent would have been able to determine whether the glycosylation of a
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Case 1:05-cv-12237-WGY Document 508 Filed 06/14/2007 Page 3 of 5
erythropoietin.
7. In Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003),
the Federal Circuit affirmed this Court’s holding that claims 1, 2 and 9 of the ‘933 patent
8. Claims 3, 7-9, 11-12 and 14 of the ‘933 patent distinguish the structure of the
claimed products being “non-naturally occurring.” The limitation was added to the claims to
“distinguish the subject matter claimed from all prior art references relating to erythropoietin
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Case 1:05-cv-12237-WGY Document 508 Filed 06/14/2007 Page 4 of 5
By its Attorneys,
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Case 1:05-cv-12237-WGY Document 508 Filed 06/14/2007 Page 5 of 5
CERTIFICATE OF SERVICE
I hereby certify that this document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
and paper copies will be sent to those indicated as non registered participants on the above date.
03099/00501 687197.1